One of the biggest challenges brand owners face in enforcing their intellectual property rights online is in tracking down the infringer – often located in a foreign country – so that a lawsuit can be served on the infringer. Generally, for due process reasons, the Federal Rules of Civil Procedure require that a complaint and summons be served personally – that is, by handing the papers to the person directly. But there are exceptions to this, particularly in situations involving overseas defendants, in which “alternative service” may be available. A recent case from federal court in the state of Washington provides an example of where Amazon and certain sellers were able to serve the lawsuit on overseas defendants via email.
Learning about the counterfeiters
Plaintiffs sued defendants, accusing defendants of selling counterfeit goods on Amazon. Plaintiffs alleged that defendants resided in Ukraine. Even after working with a private investigator and seeking third party discovery from defendants’ virtual bank account providers, plaintiffs could not find any valid physical addresses for defendants. So plaintiffs asked the court to permit service of the complaint and summons on defendants’ email addresses registered with their Amazon selling accounts. They knew those email addresses must be valid because test messages did not receive any error notices or bounce backs that would indicate the messages failed to deliver.
What is required
The court looked at Federal Rule of Civil Procedure 4(f) which allows for service of process on individuals in foreign countries through several methods, including (`1) internationally agreed methods such as those authorized by the Hague Convention, (2) according to the foreign country’s law if no international agreement exists, or (3) by other means not prohibited by international agreements as the court orders. A plaintiff must show that the specific circumstances require court intervention. Furthermore, any method of service must align with constitutional due process, meaning it must be designed to effectively inform interested parties of the ongoing action and give them a chance to object, ensuring fairness and the opportunity for defense.
The court said okay
The court found that plaintiffs had shown court intervention was necessary because plaintiffs could not find valid physical addresses but could show that the email addresses apparently were valid. As for the Hague Convention, no method it provided was available without valid physical addresses. Moreover, the court observed that whether or not the Hague Convention applied, email service on individuals in Ukraine was not prohibited by the Convention nor by any other international agreement.
And the court found email service comported with constitutional due process. Defendants conducted business through these email accounts and tests confirmed their functionality. Although defendants’ Amazon accounts were blocked, evidence suggested these email addresses were still active. The court thus concluded that email service met due process standards by being “reasonably calculated” to notify defendants, allowing them the chance to present objections.
Amazon.com Inc. v. Ananchenko, 2024 WL 492283 (W.D. Washington, February 7, 2024)
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